DCT
6:24-cv-00233
Twitch LLC v. Bote LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Twitch LLC d/b/a Hala Gear (Colorado)
- Defendant: Bote, LLC (Florida)
- Plaintiff’s Counsel: Banner & Witcoff, Ltd.
- Case Identification: 6:24-cv-00233, W.D. Tex., 05/03/2024
- Venue Allegations: Plaintiff alleges venue is proper in the Western District of Texas because Defendant Bote has a regular and established place of business in the district and has committed acts of alleged infringement there.
- Core Dispute: Plaintiff alleges that Defendant’s inflatable paddle boards and related products infringe two patents related to multi-chamber inflatable watercraft designs intended to improve stability and performance.
- Technical Context: The technology concerns the design and construction of inflatable stand-up paddle boards (SUPs), a segment of the water sports market where innovations focus on enhancing rigidity, buoyancy, and maneuverability, particularly in challenging conditions like whitewater.
- Key Procedural History: The complaint states that Plaintiff engaged in pre-suit discussions with Defendant regarding its patent rights and the alleged infringements, but that these discussions failed to resolve the dispute.
Case Timeline
| Date | Event |
|---|---|
| 2015-08-07 | Priority Date for ’466 and ’458 Patents |
| 2018-01-09 | U.S. Patent No. 9,862,466 Issued |
| 2019-11-19 | U.S. Patent No. 10,479,458 Issued |
| 2024-05-03 | Complaint Filed |
| 2024-05-13 | Inter Partes Review Filed for ’458 Patent |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,862,466 - "Inflatable Paddle Board" (Issued Jan. 9, 2018)
The Invention Explained
- Problem Addressed: The patent aims to improve the performance of inflatable paddle boards, particularly in rough water. The design seeks to enable the board's bow to "punch" through whitewater more effectively while keeping the nose of the board above the water, combining stability with maneuverability (’466 Patent, col. 2:13-18).
- The Patented Solution: The invention uses a composite structure of at least two separate inflatable chambers connected together. A "first inflatable chamber" forms the main stand-up board, while a "second inflatable chamber" is connected to it to form a "curve-shaped front hull" (’466 Patent, Abstract; col. 1:57-63). This multi-chamber design, where one chamber can overhang the other, is intended to create a more responsive and buoyant shape than a single-chamber inflatable board (’466 Patent, col. 2:10-15).
- Technical Importance: This design approach allows an inflatable product to mimic the performance characteristics of a rigid-hull watercraft, such as the rocker and bow shape, which are critical for navigating waves and currents (’466 Patent, col. 1:44-49).
Key Claims at a Glance
- The complaint asserts independent claim 15 (Compl. ¶18).
- Essential elements of claim 15 include:
- a lower inflatable chamber forming a stand-up board;
- an upper inflatable chamber connected to the lower inflatable chamber, with the upper chamber forming a rail around a portion of the lower chamber, and the combination forming a curve-shaped front hull; and
- a tent covering between the lower inflatable chamber and the upper inflatable chamber.
- The complaint reserves the right to assert additional claims (Compl. ¶17).
U.S. Patent No. 10,479,458 - "Inflatable Paddle Board" (Issued Nov. 19, 2019)
- Note: An Inter Partes Review Certificate for the ’458 Patent, included in the provided documents, indicates that all claims (1-15) were cancelled as a result of proceeding IPR2024-00889. The analysis below is based on the patent as issued and asserted in the complaint; however, the cancellation of all asserted claims presents a dispositive validity challenge to this portion of the lawsuit.
The Invention Explained
- Problem Addressed: Like its parent, this patent addresses the need for inflatable paddle boards that offer enhanced performance characteristics, such as a shape that enables the bow to effectively navigate whitewater while maintaining the board's nose above the surf (’458 Patent, col. 2:15-20).
- The Patented Solution: The solution described is an inflatable board comprising a main "stand-up board chamber" and "stacked sidewalls" that form a rail around a portion of the main chamber. The structure is joined by a "tent covering" between the main chamber and the rail, creating a composite board with a shaped hull (’458 Patent, Abstract; Claim 1). This construction aims to provide a "uniform, smooth, and responsive shape" (’458 Patent, col. 2:14-15).
- Technical Importance: The concept of "stacked sidewalls" provides another method for constructing a multi-level inflatable board, allowing for design flexibility to achieve desired performance features like inward or outward sloping rails for stability or surfing performance (’458 Patent, col. 4:55-60).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶26).
- Essential elements of claim 1 include:
- an inflatable stand-up board chamber;
- stacked sidewalls to form a rail around at least a portion of a side of the inflatable stand-up board chamber; and
- a tent covering between the inflatable stand-up board chamber and the rail.
- The complaint reserves the right to assert additional claims (Compl. ¶25).
III. The Accused Instrumentality
Product Identification
- The complaint identifies the accused products as Bote’s Rackham Aero Inflatable Paddle Board, Rover Aero Inflatable Micro Skiff, and Zeppelin Inflatable SUP (collectively, "Infringing Boards") (Compl. ¶11).
Functionality and Market Context
- The complaint alleges these are inflatable paddle boards and lists numerous specific models sold by the Defendant (Compl. ¶¶12-13). The complaint includes several images of the accused products. Illustration 1 depicts the Rackham Aero Inflatable Paddle Board, which features a main deck and distinctly raised, tube-like sides (Compl. p. 4). Illustration 2 shows the Rover Aero Inflatable Micro Skiff, which has a similar construction and is depicted with accessories like a motor and cooler, suggesting a focus on utility and stability (Compl. p. 5). Illustration 3 displays the Zeppelin Inflatable SUP, which also shows a multi-level inflatable design (Compl. p. 5). The complaint does not provide a technical breakdown of the products' construction, relying on their visual appearance to support the infringement allegations.
IV. Analysis of Infringement Allegations
’466 Patent Infringement Allegations
| Claim Element (from Independent Claim 15) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a lower inflatable chamber forming a stand-up board | The complaint alleges the accused boards are inflatable paddle boards that include this element, serving as the primary standing surface. | ¶19 | col. 2:56-60 |
| an upper inflatable chamber connected to the lower inflatable chamber, the upper inflatable chamber forming a rail around at least a portion of the lower inflatable chamber, and the combination...forming a curve-shaped front hull | The complaint alleges the accused boards include this element, pointing to the raised side structures that form a rail and a shaped bow. | ¶19 | col. 2:60-65 |
| a tent covering between the lower inflatable chamber and the upper inflatable chamber | The complaint alleges the accused boards include a covering or material connecting the lower "stand-up" portion and the upper "rail" portion. | ¶19 | col. 3:17-25 |
- Identified Points of Contention:
- Scope Questions: A central question will be whether the integrated construction of the accused boards can be mapped onto the claim's distinct elements of a "lower inflatable chamber," an "upper inflatable chamber," and a "tent covering." The defense may argue the accused products are a single, unitary inflatable structure, not the claimed combination of three separate components.
- Technical Questions: The analysis may focus on whether the material connecting the deck to the raised sides in the accused products functions as a "tent covering" to form a "curve-shaped front hull" as described in the patent (’466 Patent, col. 3:23-28), or if it is simply a connecting web in a single, complex-shaped chamber.
’458 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| an inflatable stand-up board chamber | The complaint alleges the accused boards include a primary inflatable chamber for standing. | ¶27 | col. 6:6-7 |
| stacked sidewalls to form a rail around at least a portion of a side of the inflatable stand-up board chamber | The complaint alleges the accused boards possess raised side structures that constitute "stacked sidewalls" forming a rail. | ¶27 | col. 6:8-10 |
| a tent covering between the inflatable stand-up board chamber and the rail | The complaint alleges the accused boards include a material that connects the main chamber and the rail, meeting this limitation. | ¶27 | col. 6:11-12 |
- Identified Points of Contention:
- Dispositive Validity Issue: The primary point of contention for the ’458 Patent is the cancellation of all its claims in IPR, which occurred after the complaint was filed. This event fundamentally undermines the basis for this count of infringement.
- Scope Questions: Assuming the claim survived, a key dispute would concern the meaning of "stacked sidewalls." Does this term require physically separate sidewall chambers placed upon each other, or could it read on a single, complex chamber with a stepped or multi-level profile, as may be present in the accused products?
V. Key Claim Terms for Construction
For the ’466 Patent
- The Term: "tent covering"
- Context and Importance: This term appears in the independent claim asserted (’466 Patent, Claim 15) and is not a standard term of art in watercraft design. Its construction will be critical for determining whether the fabric or material connecting the main deck to the raised rails on the accused products falls within the scope of the claim.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification suggests the tent can be made of "PVC or other suitable material," which may support an interpretation that is not limited by a specific type of fabric or structure (’466 Patent, col. 3:19-20).
- Evidence for a Narrower Interpretation: The specification repeatedly ascribes a specific function to the tent: it "forms a shape that is unique to this board, referred to herein as a 'hull' shape," and "forms a rail shape that gives the board more stability" (’466 Patent, col. 3:23-31). This functional language could support a narrower construction limited to structures that actively create a hull shape, not just any connecting material.
For the ’458 Patent
- The Term: "stacked sidewalls"
- Context and Importance: This term is central to independent claim 1 and distinguishes the structure from the "upper/lower chamber" language of the '466 Patent. Its interpretation is key to the infringement allegation, though this analysis is largely moot given the IPR outcome. Practitioners may focus on this term because it defines the core structural novelty alleged.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification provides significant flexibility, stating that chambers may be "at least partially above and/or below and/or at least partially side-by-side one another" (’458 Patent, col. 4:64-66). This could support a broad definition of "stacked" that is not strictly vertical.
- Evidence for a Narrower Interpretation: The plain meaning of "stacked" suggests a vertical arrangement. The patent's description of an "upper inflatable chamber stacked on the lower inflatable stand-up board chamber" in claim 10 could be used to argue that "stacked" requires one element to be on top of another (’458 Patent, col. 6:3-5).
VI. Other Allegations
- Willful Infringement: The complaint alleges that Defendant’s infringement was and is "intentional, willful, and malicious" (Compl. ¶¶ 21, 29). The basis for this allegation is Defendant’s alleged "knowledge of Hala Gear, Hala Gear's rights, and Bote's continuing disregard for Hala Gear's rights," which is supported by the factual allegation of failed pre-suit discussions regarding the patents (Compl. ¶¶ 15, 21, 29).
VII. Analyst’s Conclusion: Key Questions for the Case
Viability of the ’458 Patent Claim: The most immediate and likely dispositive question is one of case viability: given the post-filing cancellation of all claims of the ’458 Patent in an Inter Partes Review, can the second count for infringement proceed?
Structural Definition: For the remaining ’466 Patent, a core issue will be one of definitional scope: can the phrase "a tent covering between the lower inflatable chamber and the upper inflatable chamber," as claimed, be construed to read on the integrated, multi-level construction of the accused paddle boards?
Evidentiary Mapping: A key evidentiary question will be one of structural correspondence: what evidence will Plaintiff present to demonstrate that the accused products, which appear to be single inflatable bodies with complex shapes, are in fact comprised of the distinct "lower chamber," "upper chamber," and "tent covering" components as required by the asserted claim?